Tuesday, 15 September 2015

T 169/12 - late lines of attack

In appeal against the rejection of the opposition, the opponent submitted new lines of attacked based on documents that were originally mentioned in the notice of opposition, but were never used in any attack before the opposition division. The appellant (opponent) further submitted two new documents in the appeal procedure. Which of the documents and which lines of attack were admitted into the procedure in view of Art. 12 and 13 RPBA?

Summary of Facts and Submissions

I. The opposition against European patent 1 812 211 was rejected and the appellant (opponent) filed an appeal against this decision. The appellant requested to set aside the decision under appeal and to revoke the patent in its entirety and as an auxiliary request it requested oral proceedings.

II. Independent claims 1 and 34 of the patent as granted read as follows:

"1. A shaving cartridge (12) comprising: a housing (20) having a front edge and a rear edge; one or more shaving blades (28) between the front edge and the rear edge; a first solid shaving aid portion (31A) in front of said blades and a second solid shaving aid portion (31B) behind said blades for delivery to a user's skin during shaving wherein the first and second shaving aid portions wear away during shaving, characterized in that the first and second shaving aid portions (31A, 31B) are carried by a shaving aid holder (30) mounted on said housing and configured to allow each shaving aid portion to deflect when pressure is applied to a surface of the shaving aid portion during shaving."

"34. A method of shaving comprising: contacting the skin with a razor cartridge (12) comprising: a housing (20) having a front edge and a rear edge; one or more shaving blades (28) between the front edge and the rear edge; and a shaving aid holder (30) mounted on said housing, carrying a first solid shaving aid portion (31A) in front of said blades and carrying a second solid shaving aid portion (31B) behind said blades for delivery to a user's skin during shaving wherein the first and second shaving aid portions wear away during shaving, characterized in that the shaving aid holder is configured to allow each shaving aid portion to deflect when pressure is applied to a surface of the shaving aid portion during shaving."

III. In the present decision the following documents of the opposition proceedings are cited:

D6 - D8, D10 - D12, D14 - D21.

while the following documents were submitted by the appellant in the appeal procedure:

D12', D30

IV. The opposition had been filed against the patent in its entirety under Article 100(a) EPC, for lack of novelty and inventive step, under Article 100(b) EPC, that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art, and under Article 100(c) EPC, that the patent extends beyond the content of the application as originally filed.

The Opposition Division held that the ground for opposition of Article 100(b) EPC does not hold against the patent in suit and that the ground for opposition of Article 100(c) EPC does not hold against claims 1 and 34 of the patent as granted. The Opposition Division further considered that the subject-matter of claims 1 and 34 of patent as granted (the single request of the patent proprietor) was novel, particularly with respect to D7, D8, D10, D11, and D14. Furthermore, the subject-matter of claims 1 and 34 was considered to involve inventive step with respect to a combination of the teachings of the closest prior art D6 with D15 or D6 with D21 or with respect to a combination of D16 with D6 or of D16 with D17 or D18, or of D19 with D20.

V. With a communication annexed to the summons to oral proceedings the Board presented its preliminary opinion with respect to claims 1-35 of the patent as granted according to the single request of the respondent (patent proprietor).

The Board remarked amongst others that the ground of opposition under Article 100(c) EPC does not appear to hold against the subject-matter of claims 1 and 34 of the patent as granted. It further appeared that the appellant's argumentation under Article 100(b) EPC cannot hold either.

Taking account of the course of events in the present case it appeared to the Board that the new lines of attack concerning lack of novelty and inventive stepas well as the documents D12' and D30, both filed with the statement setting out the grounds of appeal (statement), would possibly not be admitted into the proceedings in accordance with Article 12(4) RPBA.

Furthermore, concerning novelty it appeared that the subject-matter of claims 1 and 34 of the patent as granted is novel over the available prior art.

Concerning inventive step the Board remarked that taking account of the fact that the appellant has not addressed any of the Opposition Division's considerations in the impugned decision concerning inventive step but has only presented new objections of lack of inventive step, based on new combinations of documents and/or new documents - which have an admissibility problem - it reviewed the impugned decision on a prima facie basis on the issue of inventive step. In that respect, no fault could be found with the conclusions drawn by the Opposition Division in the impugned decision, when starting either from D6, D16 or D19 - which all appeared to represent reasonable starting points for the claimed subject-matter of the patent in suit - as the closest prior art. Therefore the issue of inventive step would be discussed, if at all, taking account of the problem-solution approach based on the distinguishing feature(s) over the closest prior art.

VI. With letter dated 20 July 2015 the appellant, in reply to the Board's summons, submitted further arguments concerning its objections under Articles 100(a) and 100(b) EPC, the former concerning the admissibility of D12/D12' and the corresponding novelty objections based thereon as well as the novelty objection based on D10 as raised in the statement and its lack of inventive step objection.

VII. Oral proceedings before the Board were held on 20 August 2015. To start, the appellant withdrew its objection under Article 100(c) EPC. Thereafter the following aspects were discussed with both parties:

- sufficiency of disclosure with respect to claim 1 of the patent as granted with the appellant stating that it did not wish to submit further arguments in respect of its objection under Article 100(b) EPC in addition to what it had submitted in writing,

- novelty of the subject-matters of claims 1 and 34 of the patent as granted over the disclosure of document D10,

- admission into the proceedings of the further novelty objection of the appellant in respect of documents D12/D12', raised with the appeal,

- admission into the proceedings of the inventive step objection of the appellant in respect of document D30, raised with the appeal,

- admission into the proceedings of the inventive step objection of the appellant starting from the shaving cartridge of document D16 in combination with the teaching of either D6 or D10,

- inventive step of the subject-matters of claims 1 and 34 of the patent as granted, starting from the shaving cartridge of document D16 in combination with the teaching of either D6 or D10; the appellant additionally argued starting from the cartridge of document D6 taken on its own.

a) The appellant finally requested that the decision under appeal be set aside and the patent be revoked.

b) The respondent finally requested that the appeal be dismissed.

At the end of the oral proceedings the Board announced its decision.

VIII. The appellant argued, insofar as relevant for the present decision, essentially as follows:

[...]

IX. The respondent argued, insofar as relevant for the present decision, essentially as follows:

2.1 In its statement of grounds of appeal the appellant has not explained why the impugned decision should be set aside with respect to novelty and the documents as discussed in the decision, apart from a discussion with regard to D10, it "maintains the lack-of-novelty arguments based on D8, D14, and D11".

2.2 It is consistent jurisprudence of the Boards of Appeal that simple references to earlier submissions in opposition do not suffice for the purposes of Article 108, third sentence, EPC (see Case Law of the Boards of Appeal, 7**(th) edition 2013, chapter IV.E.2.6.4) in providing the legal and factual reasons (i.e. the substantiated arguments) for setting aside the impugned decision.

The Board might see an exception to this principle, where the decision simply does not take account of any of the arguments of the appellant based on D8/D14 and D11. However, that is not the case since the decision extensively deals with these documents.

2.3 Concerning D10 dealt with in the decision and in the statement setting out the grounds of appeal (statement) the appellant's arguments cannot hold, for the following reasons.

2.3.1 The embodiment of the wet shaving assembly according to figures 10A-10C of D10 does not concur with claim 1 requiring a [...].

2.3.2 First of all, the cartridge of D10 has no holder on which the shaving aid is placed. When [...].

2.3.3 Secondly, the shaving cake 448 is a single piece which does not "allow each of the first and second shaving aid portions to deflect". The shaving cake of figures 10A-10C is contained in the base 422 in such a way that it cannot "deflect". This is due to the fact that there is actually only a single shaving aid portion which is made in one solid body which therefore can only be moved axially, i.e. it can only "undulate" (see D10, column 12, lines 9 to 12) as a whole if pressure is applied during the shaving operation to its top surface 450.

The embodiment of figures 1-7 of D10, with two separate shaving aid portions cannot be relevant in this respect since these portions make no movement during application of pressure and its teaching is not extended to include "undulation".

The Board remarks in this context that the appellant did not present any counter argument at the oral proceedings with respect to the meaning of the term "to deflect". Consequently, its arguments cannot hold.

2.4 Thus the subject-matter of the claims 1 and 34 as granted is novel over the available prior art, in particular over D8, D11, and D14 as decided in the decision under appeal as well as D10, on appeal.

3. Admission of new objections into the proceedings (Article 12(4) RPBA)

Concerning the admission of new objections into the appeal proceedings the Board taking account of the course of events in the present case has the following considerations:

3.1 The opposition had been filed against the patent in suit in its entirety under Articles 100(a) EPC, for lack of novelty and inventive step.

3.1.1 The notice of opposition relied on twenty nine documents and contained arguments with respect to lack of novelty over D7, D8, D10, D11 (either alone or with D12 stated to be incorporated by reference), and D14.

3.1.2 The arguments concerning lack of inventive step were based on combinations of D6 with D15, or a combination of D16 with either D17 or D18, or a combination of D19 with D20 or vice versa.

3.1.3 At the oral proceedings before the Opposition Division the opponent considered D8/D14, D10 and D11 (alone) as novelty destroying. The Opposition Division acknowledged novelty of the subject-matter of claims 1 and 34 as granted over these documents.

3.1.4 Concerning inventive step the opponent considered D6 as the closest prior art and argued that the teaching of either D6 alone or when taken in combination with D15 or D21 would make the claimed subject-matter obvious to the person skilled in the art while the patent proprietor argued that none of the combinations of teachings brought forward leads to the subject-matter of claims 1 and 34 of the patent as granted. The Opposition Division then came to its conclusion that the subject-matter of the claims 1 and 34 of the patent involves inventive step.

3.1.5 The decision under appeal dealt with the following objections:

a) lack of novelty based only on D7, D8, D10, D11 (alone or with D12 stated to be incorporated by reference) and D14; and

b) lack of inventive step based only on D6 alone, or on combinations of the teachings of D6 and D15; or D19 and D20, or D16 with either D17 or D18.

3.2 The appellant filed its appeal against the decision of the Opposition Division to reject the opposition and presented in its statement the following substantiated (see point 2.2 above) objections under Article 100(a) EPC:

3.2.1 The subject-matter of claim 1 lacks novelty with respect to D10, and D12/D12' now incorporating by reference D11.

3.2.2 The subject-matter of claim 1 lacks inventive step over a combination of the teachings of D16 and D10, or a combination of D16 and D6, or of D30 taken alone or of D30 in combination with D17, D18, or D27.

3.2.3 The objections emphasised above therefore represent new objections compared to those of the preceding opposition proceedings.

No lack of novelty objection had been raised in the opposition proceedings on the basis of D12, let alone on the basis of D12' with D11 being incorporated by reference, and no inventive step objections based on D10 or D12/D12' as the closest prior art had been raised in the opposition proceedings.

3.3 Taking account of the aforementioned course of events the Board considers that the appellant has not made full use of the opportunities available to it in the opposition proceedings and now intends to file objections which it should have filed in opposition, for the reasons below.

The purpose of the inter partes appeal procedure is mainly to give the losing party a possibility to challenge the decision of the Opposition Division on its merits and to obtain a judicial ruling on whether the decision of the Opposition Division is correct (G 9/91 and G 10/91, OJ EPO 1993, 408 and 420, respectively). The appeal proceedings are not about bringing an entirely fresh case; rather the decision of the Board of Appeal will in principle be taken on the basis of the subject of the dispute in the opposition proceedings. The appeal proceedings are thus largely determined by the factual and legal scope of the preceding opposition proceedings and the parties have only limited scope to amend the subject of the dispute in appeal proceedings.

3.4 Documents D12' and D30 and arguments based thereon were submitted by the appellant for the first time with the statement.

In principle this could be allowed, if it is e.g. a normal reaction to a late turn of events in the opposition (oral) proceedings, an exceptional interpretation by the Opposition Division at a late stage or in the decision, or an evident non-allowability in view of the newly cited documents and/or objections.

None of these exceptions is, however, applicable in the present case. The objections are such as to confront the Board with further fresh cases, in particular in the present situation of the claims subject of the decision under appeal being the independent granted claims 1 and 34, i.e. without any amendments.

The procedural behaviour of the appellant is comparable with the behaviour of a patent proprietor who has not submitted necessary (auxiliary) requests at the opposition stage which in effect prevented the Opposition Division from giving a reasoned decision on their critical issues. In the present case this would compel the Board either to give a first ruling on those issues or to remit the case to the Opposition Division. This is, however, not in line with the nature of the appeal proceedings, leading the Board to exercise its powers under Article 12(4) RPBA (compare in this context for example the decisions T 1067/08, points 3 and 5.3 of the reasons; T 936/10, point 9 of the reasons; T 1125/10, points 1.2 and 1.3 of the reasons; T 1500/10; T 911/11; T 1400/11, points 2 to 2.2 and 3.2 of the reasons; all not published in OJ EPO).

3.4.1 Therefore, at the oral proceedings it was discussed with both parties whether the new lines of attack concerning lack of novelty (D12/D12' with D11 being incorporated by reference) and inventive step (D16 and D10, D6 alone, D16 and D6, or starting from D30, D10 or D12/D12') should be admitted.

3.4.2 In this context the Board notes that the appellant in the written procedure only gave the reason that the additional search for D30 was carried out "in view of the misleading and incomplete lack-of-inventive step discussion in the contested decision".

The Board cannot establish such a kind of discussion in the impugned decision, nor that at any time in the proceedings there was a discussion on the exchangeability of shaving aids on electric razors with the same on shaving cartridges, or on the skilled person being working in both fields, transferring teachings from one to the other. D30 and the submissions based on it are therefore not admitted.

3.4.3 Concerning the new novelty attack based on D12/D12' the Board considers that the appellant's arguments, presented for the first time at the oral proceedings, cannot hold either. The consequence would be that any document cited in a prior art document on which substantiated submissions were made in the opposition proceedings (in this case D11) would form part of the file and could be later simply referred to in the (appeal) proceedings. In this respect, the Board takes recourse to the existing jurisprudence on which documents can later form part of the opposition proceedings, see in this context the Case Law of the Boards of Appeal, 7**(th) edition 2013, chapter IV.C.1.5). There, only the document cited as closest prior art in the patent in suit, has a chance of being accepted when filed (or introduced by the Opposition Division or Board of Appeal) later on in the proceedings.

It is clear that D12 nor D12' fulfil that requirement.

Just as importantly, it is neither D12 nor D12' to which reference was made in D11 but only the provisional application US 60/455646 which D11 actually states to be incorporated by reference into its teaching (see page 6, line 8 and page 16, line 25). A copy of US 60/455646 has never been presented by the appellant.

This novelty objection therefore represents a complete new line of attack at the appeal stage without the right supporting evidence. When asked by the Board at the oral proceedings the appellant did not wish to further argue in this context.

The Board therefore decides that all the objections based on D12/D12', and with it the late-filed document D12', are not admitted into the proceedings.

3.4.4 Concerning the new inventive step objections based on D16 and D10, D6 on its own, and D16 and D6 the Board, in view of the appellant's arguments, holds that at least in that respect there exists a link to the impugned decision wherein D16 and D6 have been considered as closest prior art and as starting points for the person skilled in the art (see point 5 of the reasons). D10 is anyway in the proceedings. Therefore its use in an inventive step attack, starting from D16 does not pose problems either. Therefore, in the present case these new lines of attack are admitted.

4. Inventive step (Article 56 EPC)

4.1 The Board reviewed the impugned decision on the issue of inventive step.

In that respect, no fault can be found with the conclusion of the presence of inventive step as drawn by the Opposition Division in the impugned decision, when starting either from D6 or D16.

4.2 D16 discloses a [...]. Claims 1 and 34 are thus distinguished from D16 by [...].

4.3 The technical effect of [...] is [...].

4.4 The objective technical problem to be solved is thus defined as the provision of an improved [...].

4.5 This technical problem problem is solved by the subject-matter of claims 1 and 34 of the patent as granted.

Contrary to the appellant's arguments this solution is not obvious as follows.

4.6 The appellant argued that the person skilled in the art when starting from the teaching of D16 as the closest prior art and combining it with the teaching of D10 or D6 would arrive at the subject-matter claimed. These arguments cannot hold for the following reasons.

4.6.1 The embodiment according to the Figure 10 of D10 (identically to that of Figure 8) has the effect that [...] Consequently, he would not solve the aforementioned technical problem.

4.6.2 Furthermore, the teaching of the rigid shaving aids on the razor cartridge of D16 is incompatible with that of the shaving assembly of D10. The appellant at the oral proceedings only stated that it could imagine what should be done by the skilled person but has neither shown nor credibly explained how the skilled person could or should apply the shaving aid cake embodiment according to the Figure 10 of D10 into the limited space in the razor cartridge of document D16.

4.6.3 A similar conclusion - incompatible teachings which even when combined would not result in two deflectable shaving aid portions - applies to the combination of the teaching of the razor cartridge D16 with the teaching of the shaving aid 8 of D6. [...].

4.7 Concerning the appellant's arguments based on D6 alone, the Board considers that this document does neither disclose nor suggest that [...].

4.8 Taking account of the above the Board therefore considers that the subject-matter of claims 1 and 34 of the patent as granted involves inventive step.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 169/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T016912.20150820. The file wrapper can be found here. Figure taken from document D10 (US 6,584,690 B2), Fig. 10A (no changes made).

1 comment
:

If an opponent would be allowed to behave in appeal like the present one, this would open the door to abuse. It would suffice to quote the document to later let it come up, as such or in combination with another document of the same kind, as a kind of submarine or torpedo attack.

While the Boards have their rules of procedure, i.e. Art 12(4) RPBA to counter such behaviour, the OD are not without a possibility to act against such behaviour in first instance.

What matters here is the legal and factual framework of the opposition as defined in R 76(2, c). At the end of the opposition period the proprietor and the OD should be aware of all the attacks faced by the patent. It is neither the role nor the duty of the proprietor and the OD to guess which attacks could possibly be based on the documents quoted but not used for attacks. An opposition statement simply claiming on the basis of a list of documents that the patent should be revoked is not admissible.

The opponent can still attempt to file further attacks, but they have then to be submitted to an admissibility check, and should only be admitted if prima facie relevant.

By the way, there is also clear case law according to which documents cited on the SR, used in examination or cited in the patent are not automatically part of the opposition procedure, see for instance T 291/89, T 652/99 and T 111/04.

The only document cited in the patent which automatically part of the opposition proceedings is the document acknowledged as closest prior art, cf. T 536/88, T 541/98, T 454/02 or T 86/03. The present decision reiterates this point in § 3.4.3 of the reasons.

The decision is also interesting in that it reiterates that simple references to earlier submissions in opposition do not suffice in providing the legal and factual reasons (i.e. the substantiated arguments) for setting aside the impugned decision. See § 2.2 of the reasons.